patentology

02 January 2012

If this is your first time back since before the holidays, you will be noticing a few changes as you read this. In response to reader demands (you know who you are) we have refreshed the blog to give it a slightly tidier and more modern look. No doubt there is more that could be done, but for now we are subject to the limitations of time, as well as our graphic design and coding skills!

STAYING IN TOUCH

There have been a few changes behind the scenes as well. The most visible outcome of these is a new email address – we can now be reached at mail@patentology.com.au. The old address still works, and all email ends up at the same place, however we encourage use of the new address, in case we ever do move to a new underlying email provider.

The email button in the sidebar uses the new address, and you are also welcome to submit comments, questions or information anonymously via the ‘Ask Patentology’ link, which is always available in the menu bar above.

Finally, we remind all readers that each week we send out an email newsletter reviewing the articles posted in the previous week. We have created a page with more information about this newsletter, including an example so you can see what you would be signing up for! Currently there are 230 subscribers – why not join them (if you have not done so already)? Newsletters will recommence for the year on 9 January 2012.

Access to all of these services is always available in the ‘stay in touch’ box at the top of the sidebar.

WHAT YOU READ IN 2011

Top 10 (or 5, or 20, or whatever) lists are always popular at this time of year. So, clichéd though it may be, the following is a list of the most-read Patentology articles of 2011. These may bring back memories of the year past, but just remember that nostalgia is not what it used to be!

For those readers with blogs of your own, here is a hint for increasing your traffic: write articles about the dispute between Oracle and Google over their respective Java and Android technology! After less than a week, our February report on the ex parte re-examination requests filed by Google at the USPTO, against four of the Java-related patents being asserted against it by Oracle, became the second most-viewed article on Patentology ever.

At the time, the first most-viewed article was our original report of the background to the dispute, which had been accumulating hits since 18 August 2010. Both articles still receive a handful of new page views most weeks – testimony to the fact that the US dispute between Oracle and Google is of broader ongoing interest than the Australian court proceedings between Apple and Samsung, which were easily the biggest IP story down-under in 2011.

Our article comparing the patent positions of Apple, Samsung, and other rivals in the smartphone disputes proved to be remarkably popular. This was perhaps because of its visual appeal, using graphics generated using 'patent analytics' software to show how the patents held by the various main players in the mobile systems and devices relate to one another. We noted that Apple is far from being the largest patent-owner in this space, however its performance in various court hearing to date is clearly testament to the strategic significance of its technology.

While Apple versus Samsung in Australia lacked the broad international appeal of Oracle’s US dispute with Google (and no doubt also many of the other international proceedings between Apple and Samsung, which we largely left for others to cover), our articles on the ongoing developments were consistently popular with local readers. And none more so than the one which started it all, back in August!

Of course, this article has had the longest time to accumulate page views, as well as the benefit of links from many subsequent articles.

News reports that Samsung had offered up footage from the film 2001: A Space Odyssey as ‘prior art’ in a US patent dispute generally caused a bit of a stir, with a number of commentators questioning whether a fictional product could possibly invalidate a subsequent patent, and some accusing Samsung of disingenuously pursuing favourable media coverage.

However, Patentology was not convinced that Samsung did not have a serious case – as we wrote at the time:

There has been some confusion, however, due to the fact that in the US there are three kinds of ‘patents’. The familiar ‘utility patent’ protects functional inventions, while the ‘design patent’ protects physical appearance. The third type of patent is a ‘plant patent’ which protects new plant breeds.

Since registered designs (or design patents) protect appearance, you cannot have a valid and enforceable registration for something which looks the same as, or too similar to, a previously-existing article. There is no reason why such a prior article should need to be functional. For example, you would not be entitled to protect a design for a working car that had simply been copied from an earlier clay model, or non-functional ‘concept’, that had been created by someone else. Indeed, by doing so you would most likely be infringing their copyright.

While this article did not ultimately score as many hits in 2011 as our original report on the Australian patent litigation, it did have an immediate impact while the story was fresh. On the day we posted it, the blog received nearly twice as many page views as on any other single day, either before or since.

Early in the year, we were contacted by John D Smith, a Florida-based inventor and entrepreneur, who has written a book entitled Don't File A Patent. He wrote the book to let people like himself know that (in his opinion) the USPTO does not want to grant patents to hard-working inventors, it just wants to take their money.

Smith (and yes, John Smith is his real name) wanted us to review his book, which was a task we took on with some trepidation. We expected to find the usual stereotypes of greedy, overcharging, attorneys, and uncaring, incompetent patent examiners, and we were not disappointed. But we cannot help but feel that Smith's response to his experiences is largely justified. He may well have been naive, but if he had been given advice more appropriate to his circumstances he could have saved much of the US$25,000.00 he says it cost him not to get a patent. And we could not help but be won over by his determination and good humour.

We agreed to review Don't File A Patent on condition that we would publish our opinion, good or bad. Smith willingly agreed to this, and in the end we need not have been too concerned. There is much good and useful information in this book, more than balancing its flaws. And there is a cautionary tale here not only for every inventor, but also for the attorneys who advise them.

While Smith did take issue (via private email) with some of our comments, the review proved to be remarkably popular, and we genuinely hope that it helped him to sell a few books.

It is rare that an Australian patent opposition (as opposed to a full-fledged infringement proceeding between major multinational companies) receives any coverage in the media, but back in May the local incarnation of the famous Amazon.com '1-click' patent was in the news after eight-year proceedings initiated by Telstra Corporation (Australia’s largest telecommunications carrier) finally concluded.

As in most other jurisdictions (except for Europe, where software is expressly excluded from patentability), the Amazon claims were found to be patentable. Indeed, partly as a result of Australia’s somewhat unusual inventive step laws, the claims granted in this country are probably the broadest anywhere in the world.

Over the past 18 months or so, the Australian Patent Office has seemingly been on a campaign of rejecting claims on the basis that they are not patent-eligible under the 'manner of manufacture' test. The August decision against Network Solutions, LLC had the distinction of citing the US Court of Appeals opinion in CyberSource Corporation v Retail Decisions, Inc, which had only been issued two days before the Australia decision (and thus long after the applicant’s hearing in the Australian Patent Office).

Our difficulty with this series of decisions – which have continued since Network Solutions – is not so much that all of the rejected claims are directed to deserving inventions (clearly some of them are not). The greater issue is that as the Patent Office opinions increasingly cite each other as guidance, the basis for the decisions in the authorities of the Australian Federal Court and High Court are becoming more difficult to discern, and even more difficult to apply.

With two of these decisions currently on appeal, it is likely that the Federal Court will ultimately provide some clarity, for the Patent Office and applicants alike. However, the costs involved (on the order of A$50,000.00) are somewhat prohibitive for most applicants, and in the meantime it seems that we can expect continued rejection of a range of claims that are perceived to be directed to 'business methods'.

This is probably the most ‘technical’ article to make the top 10, in the sense that it relates to a very specific area of Australian patent law, and is therefore not obviously of wide interest. The decision discussed in the article was issued by Justice Bennett, before she became internationally famous courtesy of Apple and Samsung.

The Federal Court decision relates to the interpretation of the ‘whole of contents’ novelty provisions in the Australian Patents Act 1990. These provisions define the prior art effect of a patent application having an earlier priority date, but a later date of publication, than a subsequent claim in another patent or application. Most of us believed that the ‘whole of contents’ rule was relatively simple: such documents can be used for the purpose of assessing novelty, but not inventive step.

However, according to Justice Bennett the law is somewhat more complex than this, and requires the drafting of a 'notional claim' based on the disclosure in the prior application before it can be used as the basis of a novelty attack. The implications of this are far-reaching, and potentially affect every stage of the patent life cycle from examination to litigation.

We would like to see the law simplified (again), but to date have heard nothing to suggest that the issue has been picked up in the current patent reform agenda.

Yet another Apple/Samsung/Google article makes it into the top 10 at number nine. The story in this case was that Google Senior Vice President and Chief Legal Officer David Drummond had blogged that ‘Android’s success has yielded … a hostile, organized campaign against Android by Microsoft, Oracle, Apple and other companies, waged through bogus patents.’ Most observers rightly interpreted this as a rather unseemly whinge, coming from one of the world’s richest and most valuable companies.

The fact is – as we pointed out at the time – that the companies accused of ‘campaigning’ against Android have actually spent many years and billions of dollars in research and development in relation to mobile technology, while Google has been focussed elsewhere. It is a relative newcomer to this market, and will have to deal with the realities of that situation. We are sure that, in the end, Google will do just fine!

Of course, since then the release of Walter Isaacson’s biography of Steve Jobs has revealed that, at least as far as Apple is concerned, the patent disputes really are all about Google and Android. But that is still no justification for the Chief Legal Officer of a company like Google to run whining to the blogosphere!

Back in March and April, we posted a series of eight articles reviewing some of the major changes to Australian patent law being proposed by IP Australia in its reform legislation, the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011. The first of therse articles, dealing with inventive step, remains the most popular, and just squeezes into the top 10.

The Bill has been introduced in the Australian Senate, but is still awaiting further action. There is no indication, as yet, of when it will become law, but it seems to be widely expected that its major provisions are unlikely to come into effect prior to 2013.

CONCLUSION

The above list represents the ten most frequently viewed articles of 2011. In a further retrospective, we will review our favourite articles – posts which we thought were significant, but perhaps did not attract the attention we believed that they deserved the first time around.